Brazil has started accepting requests for position marks
“The Brazilian Patent and Trademark Office is now accepting position mark applications, offering a new form of protection for trademark owners in a growing market. “
The Brazilian Patent and Trademark Office (BPTO) began accepting position mark applications on October 1, 2021. Position marks are marks characterized by the particular location in which they are placed on a product. While position marks were previously recognized by the BPTO and the courts, they had not yet qualified for a separate mark registration; most trademark owners have registered them as figurative or three-dimensional marks.
The new registration category comes after months of public discussions held by the BPTO and was part of its action plan for 2021.
Even though position marks were not expressly recognized by Brazilian intellectual property law before Ordinance No. 37/2021 (of September 13, 2021), protection for a position mark could be obtained by registering it. under another brand category. The BPTO also offers a position mark search option in its online database. Therefore, no legislative change was necessary for the BPTO to begin accepting position mark applications. Brazilian industrial property legislation (Federal Law No. 9.279 / 96) already defines registrable marks as any visually perceptible distinctive sign which, by definition, should include position marks.
To be registrable in Brazil, a position mark must consist of a distinctive sign, affixed in a singular and specific position on a product or service, dissociated from any technical or functional effect, in accordance with Ordinance No. 37/2021.
How Trademarks Previously Protected Position Marks in Brazil
Perhaps the most notable case of a position mark is the red sole of Christian Louboutin’s shoes, which was recognized as a position mark by the Court of Justice of the European Union in 2018.
While such a case would not find equivalence in Brazilian law, which does not allow the registration of isolated colors as trademarks, Louboutin applied for the registration of its red-soled shoe as a three-dimensional trademark. in Brazil in 2009 (application number 901514225). The filing was then changed to a figurative mark application in 2012. To date, the application has not yet been granted by the BPTO.
But Brazil has also had its share of notable cases involving position marks. Just like Louboutin, more and more brands have taken the route of figurative mark applications in an attempt to register position marks.
After seeing its trademark application refused by the BPTO in 1991, NEW BALANCE ATHLETICS, INC. won in court the right to use the letter “N” as a position mark on his tennis shoes. The registration was then granted by the BPTO (trademark registration nº 815547480) as a figurative mark.
Another example is the famous Adidas three stripes. The company also requested protection for its well-known figurative element affixed to the side of a jacket. This registration was granted by the BPTO in 2017 (trademark registration no.823362604).
Among the other trademarks whose rights to position marks have been recognized by Brazilian courts is Levi Strauss.
Position marks in the new BPTO ordinance
As clarified by the BPTO in responding to comments made during the public consultation, position marks can be affixed physically, digitally or virtually, provided that they follow a specific position pattern, occupying a singular position (two or more positions). are not accepted), and are distinctive in their entirety (taking into account both the sign and its position).
In addition, the BPTO has officially clarified some limitations and requirements that will be taken into consideration when analyzing the availability and registrability of position marks. For example, it is required that the adopted specification is compatible with the medium on which the mark is affixed, as shown in the image, according to article 5 of Technical Note no. 02/2021.
Applicants should use the form for three-dimensional marks until a specialized form for position marks is provided by the BPTO.
Applicants whose applications for word, figurative, composite and three-dimensional marks are pending before October 1 can modify their filings to apply for a position mark, although the BPTO will only consider them after all the necessary systematic adaptations have been made.
The BPTO also indicates in Technical Note no. 02/2021 that the protection is limited to the whole consisting of the sign affixed in a singular and specific position of an element, and not to the location or the element in itself.
A new trendy asset for a growing market
It will be necessary to wait until the Office begins to accept new requests before being able to analyze in more detail how this type of request will be treated.
Kipling is said to have filed the first position mark application in Brazil. More brand owners will do the same, as Brazil becomes a target market for foreign and local businesses.
Ana Clara Ribeiro is a licensed lawyer in Paraná, Brazil, and CEO of 3Três Consulting & Creative, a private intellectual property firm specializing in strategies for the arts, entertainment and communications.
For more information on 3Três, please visit their website.
Paula Giacomazzi Camargo is a licensed lawyer in Paraná, Brazil, specializing in criminal law and criminal procedure. She is currently working in the field of intellectual property, particularly in cases related to trademarks, copyright, commercial clothing and unfair competition under the trademark law and fashion department of Baril Advogados in as a legal analyst.